||The examples and perspective in this article deal primarily with the United States and do not represent a worldwide view of the subject. (July 2012)|
The first-sale doctrine plays an important role in copyright and trademark law by limiting certain rights of a copyright or trademark owner. The doctrine enables the distribution chain of copyrighted products, library lending, gifting, video rentals and secondary markets for copyrighted works (for example, enabling individuals to sell their legally purchased books or CDs to others). In trademark law, this same doctrine enables reselling of trademarked products after the trademark holder put the products on the market. The doctrine is also referred to as the "right of first sale," "first sale rule," or "exhaustion rule."
The first-sale doctrine is one of the traditional safety valves.
Copyright law grants a copyright owner an exclusive right "to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending." 17 U.S.C. 106(3). This is called "distribution right" and differs from the copyright owner's "reproduction right" which involves making copies of the copyrighted works. Rather than the right to copy, the distribution right involves the right to transfer physical copies or phonorecords (i.e., recorded music) of the copyrighted work. For example, the distribution right could be infringed when a retailer acquires and sells to public unlawfully made audio or video tapes. Although the retailer may not have copied the work in any way and may not have known that the tapes were made unlawfully, he nevertheless infringes the distribution right by the sale. The distribution right allows the copyright owner to go after any member in the chain of distribution.
The first-sale doctrine creates a basic exception to the copyright holder's distribution right. Once the work is lawfully sold or even transferred gratuitously, the copyright owner's interest in the material object in which the copyrighted work is embodied is exhausted. The owner of the material object can then dispose of it as he sees fit. Thus, one who buys a copy of a book is entitled to resell it, rent it, give it away, or destroy it. However, the owner of the copy of the book will not be able to make new copies of the book because the first-sale doctrine does not limit copyright owner's reproduction right. The rationale of the doctrine is to prevent the copyright owner from restraining the free alienability of goods. Without the doctrine, a possessor of a copy of a copyrighted work would have to negotiate with the copyright owner every time he wished to dispose of his copy. After the initial transfer of ownership of a legal copy of a copyrighted work, the first-sale doctrine exhausts copyright holder's right to control how ownership of that copy can be disposed of. For this reason, this doctrine is also referred to as "exhaustion rule."
The doctrine was first recognized by the Supreme Court of the United States in 1908 (see Bobbs-Merrill Co. v. Straus) and subsequently codified in the Copyright Act of 1976, 17 U.S.C. § 109. In the Bobbs-Merrill case, the publisher, Bobbs-Merrill, had inserted a notice in its books that any retail sale at a price under $1.00 would constitute an infringement of its copyright. The defendants, who owned Macy's department store, disregarded the notice and sold the books at a lower price without Bobbs-Merrill's consent. The Supreme Court held that the exclusive statutory right to "vend" applied only to the first sale of the copyrighted work.
Section 109(a) provides: "Notwithstanding the provisions of section 106 (3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord." The elements of the first sale doctrine can be summarized as follows: (1) the copy was lawfully made with the authorization of the copyright owner; (2) ownership of the copy was initially transferred under the copyright owner's authority; (3) the defendant is a lawful owner of the copy in question; and (4) the defendant's use implicates the distribution right only; not the reproduction or some other right given to the copyright owner.
Application to public display right
17 U.S.C. §109(c) creates a limited exception to a copyright owner's public display right. Owner of a lawful copy of a copyrighted work can, without permission from the copyright owner, display that copy to viewers present at the place where the copy is located. For example, an owner of copy of a computer program (and only a computer program under §109(c)) cannot display the copy publicly on a website under this provision.
Most U.S. art museums have permanent collections that were acquired through purchases, gifts, and bequests, and on which they draw for exhibitions to the public. Museums also present special exhibitions, largely made up of works not in their collections, through loans from private collectors, galleries, and other institutions. For all these activities museums depend on the protections afforded by Section 109. Section 109(c) provides that the owner of a particular copy “lawfully made under this title” is entitled to display that copy publicly without the copyright owner’s permission. Section 109(a) similarly allows museums to buy, borrow, loan, and sell such “lawfully made” artworks.
The first sale doctrine only limits copyright holders' distribution right. However, occasionally this principle clashes with the copyright owner's other rights such as reproduction and adaptation rights. For example, in Lee v. A.R.T. Co., the defendant bought plaintiff's artworks in the form of notecards and then mounted them on ceramic tiles, covering the artworks with transparent epoxy resin. Despite plaintiff's assertion of violation of his adaptation right, the 7th Circuit held that the adaptation right was not violated and that defendant's sale of the tiles was protected under the first sale doctrine. However, based on very similar facts, the 9th Circuit in Mirage Editions, Inc. v. Albuquerque A.R.T. Company held that plaintiff's adaptation right was infringed and that the first sale doctrine did not protect the defendant under such circumstances.
Application to digital copies
Application of the first-sale doctrine to digital copies of copyrighted works poses difficult policy questions. In today's world, copies of copyrighted works, music, movies, and software, are increasingly bought by downloading through the Internet. For example, can a lawful purchaser of a song in the AAC format from the iTunes Store be allowed, consistent with the first sale doctrine, to resell or distribute that copy to others? Digital copies of copyrighted works do not comfortably fit within the constraints of the first-sale doctrine. Unlike transactions where a tangible copy changes hands, a digital transfer results in a reproduction of the work through the electronic transmission of a new copy of the work to its recipient. In other words, transferor retains the source copy unless deleted from the hard disk manually or through some special technology. By sending a copy to the transferee, the transferor infringes both the reproduction and distribution rights, but the first-sale doctrine provides no defense to the infringement of the reproduction right. For example, this exact issue is playing out in the ongoing litigation against ReDigi, an online marketplace for pre-owned digital music.
The question is whether the first-sale doctrine should be retooled to reflect the realities of the digital age. Physical copies degrade over time, whereas digital information does not. Works in digital format can be reproduced without any flaws and can be disseminated worldwide without much difficulty. Thus, applying the first-sale doctrine to digital copies affect the market for the original to a greater degree than transfers of physical copies. The U.S. Copyright Office stated that "[t]he tangible nature of a copy is a defining element of the first-sale doctrine and critical to its rationale."
However, in Europe, the European Court of Justice ruled on July 3, 2012, that it is indeed permissible to resell software licenses even if the digital good has been downloaded directly from the Internet, and that the first-sale doctrine applied whenever software was originally sold to a customer for an unlimited amount of time, as such sale involves a transfer of ownership, thus prohibiting any software maker from preventing the resale of their software by any of their legitimate owners. The court requires that the previous owner must no longer be able to use the licensed software after the resale, but finds that the practical difficulties in enforcing this clause should not be an obstacle to authorizing resale, as they are also present for software which can be installed from physical supports, where the first-sale doctrine is in force. The ruling applies to the European Union, but could indirectly find its way to North America; moreover the situation could entice publishers to offer platforms for a secondary market.
For the first sale doctrine to apply, lawful "ownership" of the copy or phonorecord is required. As §109(d) prescribes, first sale doctrine does not apply if the possession of the copy is "by rental, lease, loan, or otherwise without acquiring ownership of it."
Some software and digital content publishers claim in their end-user license agreements (EULA) that their software or content is licensed, not sold, and thus the first sale doctrine does not apply to their works. These publishers have had some success in contracting around first sale doctrine through various clickwrap, shrink wrap, and other license agreements. For example, if you buy MP3 songs from Amazon.com, the MP3 files are merely licensed to you and hence you may not be able to resell those MP3 files. However, MP3 songs bought through iTunes Store may be characterized as "sales" because of Apple's language in its EULA and hence they maybe resell-able, if other requirements of first sale doctrine are met.
Courts have struggled and taken dramatically different approaches to sort out when only a license was granted to the end user as compared to ownership. Most of these cases involved software-licensing agreements. In general, courts look beneath the surface of the agreements to conclude whether the agreements create licensing relationship or if they amount to, in substance, sales subject to first sale doctrine under §109(a). Thus, specifying that the agreement grants only a "license" is necessary to create the licensing relationship, but not sufficient. Other terms of the agreement should be consistent with such a licensing relationship.
In Vernor v. Autodesk, Inc. the 9th Circuit created a three-factor test to decide whether a particular software licensing agreement is successful in creating a licensing relationship with the end user. The factors include: 1) whether copyright owner specifies that a user is granted a license; 2) whether the copyright owner significantly restricts the user's ability to transfer the software to others; and 3) whether the copyright owner imposes notable use restrictions on the software. In Vernor, Autodesk's license agreement specified that it retains title to the software and the user is only granted a non-exclusive license. The agreement also had restrictions against modifying, translating, or reverse-engineering the software, or removing any proprietary marks from the software packaging or documentation. The agreement also specified that software could not be transferred or leased without Autodesk's written consent, and could not be transferred outside the Western Hemisphere. Based on these facts, the 9th Circuit held that the user is only a licensee of Autodesk's software, not an owner and hence the user could not resell the software on eBay without Autodesk's permission.
However, the same 9th Circuit panel that decided Vernor v. Autodesk, refused to apply Vernor's three-factor test in UMG v. Augusto to a purported licensing agreement created when UMG sent unsolicited promotional CDs to music critics. The promotional CDs' packaging contained the language: "This CD is the property of the record company and is licensed to the intended recipient for personal use only. Acceptance of this CD shall constitute an agreement to comply with the terms of the license. Resale or transfer of possession is not allowed and may be punishable under federal and state laws." Augusto tried to sell these CDs on eBay and UMG argued that first sale doctrine did not apply since the CDs were not sold and only a licensing relationship was created. However the court held that first sale doctrine applies when a copy is given away and that recipients of the promotional CDs did not accept the terms of the license agreement by merely not sending back the unsolicited CDs.
In the case UsedSoft v Oracle, the European Court of Justice ruled that the sale of a software product, either through a physical support or download, constituted a transfer of ownership in EU law, thus the first sale doctrine applies; the ruling thereby breaks the "licensed, not sold" legal theory, but leaves open numerous questions.
Importation of copies
Section 602(a)(1) of the Copyright statute states that "importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords." This provision provides copyright owner an opportunity to stop goods from entering the United States market altogether.
Application of this provision created difficult legal issues in the context of gray market products. Gray market dealers buy the genuine goods in foreign countries at a significant discount from U.S. prices. They then import these genuine goods into the U.S. and sell them at discount prices, undercutting the authorized U.S. dealers. The gray market exists where the price for goods outside the US is lower than the price inside.
On the surface, §602(a), barring unauthorized importation, would seem to clash with the first-sale doctrine, which permits the resale of lawfully made copies. The issue comes down to whether §602(a) creates an affirmative right to bar all unauthorized importation, or does the first-sale doctrine limit the reach of §602(a), thus permitting the resale of at least some lawfully made imported copies.
In 1998 the U.S. Supreme Court in Quality King v. L'Anza found that first-sale doctrine applied to imported goods at least where the imported goods are first lawfully made in the United States, shipped abroad for resale, and later reenter the United States. That case involved importation of hair care products bearing copyrighted labels. A unanimous Supreme Court found that the first-sale doctrine does apply to importation into the US of copyrighted works (the labels), which were made in the US and then exported.
However, the Supreme Court did not decide the issue where gray-market products are initially manufactured abroad and then imported into the US. The Court indicated that importation of goods made outside the US could perhaps be barred under §602(a), since such goods would not be "lawfully made under this title." Such products might be lawfully made, either by the copyright owner or a licensee, but they would not be lawfully made under US copyright law. Rather, they would be lawfully made under the copyright laws of the other country; and the first-sale doctrine would therefore not limit the §602 importation restriction.
The 2008 Omega v. Costco case involved this exact unresolved issue, where the defendant Costco obtained authentic Omega watches, which feature a copyrighted design on the back of the watches, through the gray market and resold them in its stores in the US. Omega manufactured these watches outside the US and did not authorize their importation into the US. Based on the Quality King case, the 9th Circuit held that "application of first-sale doctrine to foreign-made copies would impermissibly apply" the Copyright Act extraterritorially. However, the court stated that first-sale doctrine might still apply to a foreign manufactured copy if it was imported "with the authority of the U.S. copyright owner." The Supreme Court granted certiorari to Omega v. Costco, and affirmed 4-4. However, as an evenly split decision, it set precedent only in the 9th Circuit, not nationwide.
However, in Kirtsaeng v. John Wiley & Sons, Inc., in 2013, the United States Supreme Court held in a 6-3 decision that the first-sale doctrine applies to goods manufactured abroad, even if they were manufactured abroad with the copyright owner's permission and imported into the US. The case involved a plaintiff who imported Asian editions of textbooks that were manufactured abroad with the publisher-plaintiff's permission. The defendant then without permission from the publisher imported the textbooks and resold on eBay. The Supreme Court's holding severely limits the ability of copyright holders to charge vastly different prices in different markets due to ease of arbitrage. The decision does remove incentives to US manufacturers to shift the manufacturing abroad to attempt to circumvent the first-sale doctrine altogether.
The Record Rental Amendment of 1984, codified in 17 USC §109(b) prohibits an owner of a phonorecord that embodies a sound recording or musical work from renting it to the public for direct or indirect commercial advantage. This exception was designed to prevent music stores from renting records and thereby facilitating home copying.
Section 109(b) is an exception to the first sale doctrine, but it is limited in several ways. It applies only to rentals, and not to resale or other transfers. It is also limited to a subset of sound recordings—only those sound recordings that contain only a musical work. It does not apply to sound recordings that contain other content, such as commentaries or dialog soundtrack, or to non-musical sound recordings, for example audiobooks. Lastly, libraries and educational institutions are exempt from this restriction, and may rent or loan musical sound recordings.
The Copyright Software Rental Amendments Act of 1990 amended §109(b) further to prohibit rentals of computer software for direct or indirect commercial advantage. The exception does not apply to lending of a copy by a nonprofit library for nonprofit purposes, provided the library affixes an appropriate warning. The amendment also specifically excluded:
- A computer program which is embodied in a machine or product and which cannot be copied during the ordinary operation or use of the machine or product; or
- A computer program embodied in or used in conjunction with a limited purpose computer that is designed for playing video games and may be designed for other purposes.
Application in trademark law
With reference to trade in tangible merchandise, such as the retailing of goods bearing a trademark, the first sale doctrine serves to immunize a reseller from infringement liability. Such protection to the reseller extends to the point where said goods have not been altered so as to be materially different from those originating from the trademark owner.
- Copyright Directive 2001/29/EC, including the right to make a copy for private use
- Copyright infringement
- Digital rights management
- Droit de suite, policy in French and EU law as far as regards copyright on works of art
- Exhaustion of rights – A concept in EU law similar to the US "First-sale doctrine" as far as regards patents
- Fair use
- Limitations on exclusive rights: Computer programs
- Vault Corp. v. Quaid Software Ltd., a 1988 case on the extent of software copyright
- No. 11-697, [http://www.americanbar.org/content/dam/aba/publications/supreme_court_preview/briefs/11-697_petitioneramcuassnofartmuseumdirectorsetal.authcheckdam.pdf BRIEF OF THE ASSOCIATION OF ART MUSEUM DIRECTORS, THE ART INSTITUTE OF CHICAGO, THE J. PAUL GETTY TRUST, MUSEUM ASSOCIATES DBA LOS ANGELES COUNTY MUSEUM OF ART, THE MUSEUM OF MODERN ART, THE SAN FRANCISCO MUSEUM OF MODERN ART, THE SOLOMON R. GUGGENHEIM FOUNDATION, THE WHITNEY MUSEUM OF AMERICAN ART, ET AL. AS AMICI CURIAE IN SUPPORT OF PETITIONER], p2
- "Executive Summary Digital Millennium Copyright Act Section 104 Report". Retrieved 8 May 2012.
- CJEU Judgment
- Timothy B. Lee (July 3, 2012). "Top EU court upholds right to resell downloaded software". Ars Technica.
- "EU Court OKs Resale of Software Licenses". AP.
- Jas Purewal. "The legality of second hand software sales in the EU". gamerlaw.co.uk. (dead link; mirror here)
- Hadro, Josh (February 3, 2011). "In Wake of Costco v. Omega, Libraries Can Proceed with "Fair Degree of Confidence"". Library Journal. Retrieved November 28, 2012.
- "John Wiley & Sons Inc. v. Kirtsaeng".
- "Judge Orders Software Developer to Remove And Stop Using Deceptive And Restrictive Clauses" (Press release). Office of New York State Attorney General. 2003-01-17. Retrieved 2012-12-22.
- The VSDA (Video Software Dealer's Association) 's list of lobbying priority issues includes protection of the First Sale Doctrine.
- Explanation of the "Betamax Case"
- Quality King Distributors, Inc. v. L'anza Research International, Inc., 1998 WL 96265 syllabus (summary), Court decision written by Justice Stevens, Justice Ginsburg's Concurrence and 1998 B.C. Intell. Prop. & Tech. F. 040801 report of the decision
- Davidson & Associates v. Internet Gateway Inc ruling
- Blizzard v BnetD
- Nicole Rizzo Smith, "A Dubious Decision: First Sale Doctrine Does Not Extend to Copyrighted Works Made Overseas", Sunstein IP Update (October, 2009)
- Thomas Hoeren: Der Erschöpfungsgrundsatz bei Software, GRUR 2010, 665 - 673 German